Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s election without traverse of the invention of Group I, claims 1-4 in the reply filed on 4/22/26 is acknowledged. Applicant’s presentation of new claims 16-31 for examination as belonging to the elected invention, is also acknowledged. Claims 1-4 and 16-31 are examined herein.
Claims 5-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/22/26.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is directed to a packaging container (see the claim preamble), and as would be expected of a claim to a packaging container, claim 1 is further structurally limited by reference to features of the claimed container. See lines 2-7 of claim 1. However, claim 1 is also drafted to recite that the claimed coupling element, a structural feature of the packaging container, is sized and configured to receive a central coupling element of a packaging element thereon. In doing so, claim 1 is drafted so that it is further structurally limited by reference to an element or elements (the central coupling element of a packaging element) that are themselves not positively claimed. The problem is that applicant’s claim drafting raises the question whether the applicant’s intention is to claim the sub-combination of the packaging container only (as suggested by the claim preamble), or whether the applicant’s intention is to claim the combination of the packaging container and the central coupling element of a packaging element (as suggested by the structural limitation referencing the central coupling element of a packaging element). The bold text above is for emphasis.
Claim 1 is further indefinite for similar reasons with respect to limitations in the last three lines of the claim. In this case, the claim appears to recite a function, but that function is made dependent on structure that is not positively claimed. Thus, whether or not the coupling element can perform the claimed function of positioning the packaging element and plurality of surgical elements above the base surface of the first half, depends on the packaging element and surgical elements that themselves are not positively claimed, not just on the claimed structural features of the packaging container. So in this case too, claim 1 is indefinite because the claim drafting raises the question whether claim 1 is directed to the sub-combination of the packaging container only, or whether claim 1 is directed to the combination of the packaging container and non-container features (the packaging element and plurality of surgical elements).
Claim 2 is further indefinite for similar reasons as claim 1 is. That is, claim 2 recites that the claimed tapered peg be “sized.....for insertion into the opening defined by the central coupling body”, and in doing so claim 2 further structurally limits the claimed tapered peg by reference to a feature (the opening defined by the central coupling body) that is not claimed. Thus claim 2 is also indefinite because it too raises the question whether it is directed to the sub-combination of the packaging container only, or whether it is directed to the combination of the packaging container and the central coupling body and its opening. Not only that but claim 2 is indefinite because the phrase “central coupling body” therein lacks antecedent basis.
As should by now be evident, several claims such as claims 4 and 17, for example only, are indefinite for reasons similar to those described above. In the comparison of the claims with the prior art below, the claims are interpreted as being directed to the sub-combination of the packaging container only, and therefore, all references in the claims to non-container features are treated to the extent possible as being merely statements of intended use with respect to the claimed container. On the other hand, amendments to clarify the scope of the claims are required in response to this office action. The examiner notes in the above regard that it is by now well settled that features that are not claimed may not be relied upon by the applicant in support of patentability. “The prior art rejections below also treat “central coupling body” therein as “central coupling element”. Claim amendments consistent with this are also required if applicant intended the same when claim 2 was drafted for examination.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 3-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Caron (2005/0173278). With reference to Figs 1-3 Caron discloses a packaging container that has all of the structural elements of the claims and is capable of all of the claimed functions. For example, referring to claim 1 the claimed packaging container can be packaging and display box 100. The claimed first half can be bottom portion 110 and the claimed second half can be lid portion 120. The claimed coupling element can be peg 141 in Fig 3. These structural features can perform all of the claimed functions such as receiving a central coupling element of some packaging element and positioning the packaging element and surgical elements connected thereto above the base surface of the first half.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 2 and 16-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Caron. Caron meets most of the features of these claims including the functional recitation of material configured to be sterilized in claim 25. However, Caron may not disclose some of the features of claims 2 and 16-31 such as the tapered peg of claims 2 and 16 and the specific coupling features of claim 25 that couple the first half and second half in the locking relationship disclosed in Caron and required in claim 25. On the other hand, these features are conventional. For example, see the cited reference to Lachambre (5,396,991) at column 3 lines 15-20. Thus, not only are tapered pegs conventional but those of ordinary skill in the art know that articles to be retained on pegs can be wedged unto tapered pegs. In another example friction fitting parts extending from inside of a container lid into portions of a container base to lock the lid and base together is a conventional expedient. Therefore, it would have been obvious to provide the apparatus of Caron with the missing features, in order to make the apparatus more economical to produce and/or in order to make the apparatus more suitable for its intended purpose.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Aviles can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB K ACKUN/Primary Examiner, Art Unit 3736
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